Definitions
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identify and distinguish the source of goods of one party from those of others.

Over time a trademark comes to signify a certain measure of quality in the particular good or service. Trademarks can therefore be used as an effective marketing tool.

Benefits of a US Trademark Registration
Provides constructive notice to the public of the claim of ownership of the mark.
Creates a legal presumption of ownership of the mark and of an exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
Allows enforcement of the trademark rights in Federal Court.
Allows use of the US trademark as a basis to obtain registration in foreign countries.
Allows filing of the US registration with the US Customs Service to prevent importation of infringing foreign goods

Types of Trademarks Word mark - a trademark consisting of words or a phrase. Word marks can be stylized to make them more distinctive. Design mark - a trademark consisting of a graphic, such as a logo. Composite mark - a trademark consisting of a logo and one or more words. Service mark - A mark used to indicate the origin of services as opposed to goods. Trade dress - the appearance of a product or its packaging that distinguishes the product in the marketplace and indicates its unique origin.Use based application - this application is based on actual use of the mark in commerce to identify goods or services in the marketplace. Intent to use - this application is based on an intent-to-use the mark in commerce. A statement of actual use must be filed within 6 months of the mailing date of the Notice of Allowance.

A Typical Trademark Application ProcessStep 1: Conduct a search of federal, state, and common law marks. A comprehensive national search of existing marks will help determine whether a mark is available for registration and will help you avoid infringing another mark. Step 2: File a trademark application based on actual use or intent to use the mark. Step 3: Respond to any office actions issued by the Trademark Examiner assigned to the case. Step 4: Respond to oppositions (if any) to the published mark. Step 5: A Notice of Allowance (for intent-to-use applications) or a Certificate of Registration (for use-based applications) is issued.

Types of Trademark ApplicationsUse based application - this application is based on actual use of the mark in commerce to identify goods or services in the marketplace. Intent to use - this application is based on an intent-to-use the mark in commerce. A statement of actual use must be filed within 6 months of the mailing date of the Notice of Allowance.

Applying for a TrademarkStep 1: Conduct a search of federal, state, and common law marks. A comprehensive national search of existing marks will help determine whether your mark is available for registration and will help you avoid infringing another mark.Step 2: File a trademark application based on actual use or intent to use the mark.Step 3: Respond to any office actions issued by the Trademark Examiner assigned to your case.Step 4: Respond to any oppositions to your published mark.Step 5: A Notice of Allowance (intent-to-use applications) or a Certificate of Registration (use-based applications) is issued.

Trademark prosecution
Once an application is filed with the Trademark Office, a Trademark Examiner is assigned to review the application and to determine whether to allow the mark. During this process, we will correspond with the Trademark Office and address any concerns the Examiner has regarding your mark. This may require an interview with the Trademark Examiner. If the application is allowed, the trademark will be published in the Trademark Gazette and if no third-parties oppose the mark, then it will be registered with the Trademark Office.

At that point, the US Trademark Office will send a Certificate of Registration. At that time, it is legally permissible to use the ® symbol (letter R in a circle) to indicate that the mark being used is a registered trademark. Prior to that time, it is legally permissible to use the ™ symbol (letters TM raised and pslaced to the right of the mark) to assert common law rights and to warn others.

Post Registration Services andPost Registration Trademark Matters
What happens after the Trademark Registration is granted? A Trademark Registration can remain in force indefinitely, so long as certain requirements are met, as follows.

A Statement of Continued Use is required between the 5th and 6th years from the date the Registration was granted. This Statement of Continued Use is also referred to as a Section 8 declaration or affidavit.

Incontestability: A Declaration under Section 15 can be filed with the Statement of Continued Use, and is often combined with it, in which case it is called a Combined Declaration under Sections 8 and 15. This renders the Trademark "incontestable" within the meaning of the U.S. Trademark law, and is a significant and important right.

Trademark registrations can be maintained in force (i.e., renewed), by filing a Renewal Application at 10-year intervals. A Renewal Application is a short form, and is also referred to as a Section 9 declaration or affidavit.

A Renewal Application must be accompanied by a Statement of Continued Use. In view of this, normally a single form is used which combines the Renewal with the Statement of Continued Use, called a Combined Declaration under Sections 8 and 9.

We have experience preparing and filing all of the above items for registered Trademarks. Please contact us with your questions concerning registered Trademarks.